Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Applicant’s election without traverse of Invention Group I (claims 1-8) in the reply filed on 12/08/2025 is acknowledged.
Claim(s) 9-15 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
The following claims are objected to because of the following informalities:
Claim 3 (line 1) recites the limitation “arranged at one or more of circumferentially around” which is grammatically incorrect.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “bias device” in claims 1, 3-5, 7 ; “anti-rotation structure” in claim 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Examiner’s Note:
For the purposes of examining this application, the claim 3 limitation “the at least one bias device is arranged at one or more of circumferentially around an anti-rotation structure partially embedded in the turbine shroud, within a recess of the nozzle ring or the turbine shroud, and around a central axis of rotation of the turbine” is interpreted to mean that the at least one bias device is arranged within a recess of the nozzle ring or the turbine shroud, and around a central axis of rotation of the turbine as identified in paragraph 0036.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. - The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 (line 4) recites the limitation “and wherein when the at least one bias device is arranged around the central axis of rotation of the turbine, the at least one bias device has a diameter similar to a diameter of the nozzle ring.” which renders the claim indefinite because it is unclear how the at least one bias device is sometimes not arranged around the central axis of rotation of the turbine as indicated by the term “when”. If there if is only one bias device, it is by necessity arranged at a location which is around the central axis of rotation of the turbine. This is also unclear because the claim 3 limitation just prior to this appears to identify/require that the “at least one bias device is arranged… around a central axis of rotation of the turbine”, so how can at least one bias device subsequently not be arranged around the central axis of rotation of the turbine?
Claim 3 recites the term “similar”, which is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, one having ordinary skill in the art would be unable to identify whether a bias device has a diameter similar to a diameter of a nozzle ring or not similar. For example, if the bias device has a diameter that is 60% of a ring diameter, is that similar or not? There is not enough information to determine.
In view of the 112(b) rejections set forth above, the claims are rejected below as best understood.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6168375 B1 (hereinafter LaRue) in view of US 8662833 B2 (hereinafter Wengert).
Examiner’s note: All mapping below (references made to reference characters, figures, paragraphs, etc.) is with regard to the base reference (the first reference identified above) unless otherwise noted.
Regarding claim 1, LaRue discloses:
The compressor side of a turbocharger comprising:
at least one bias device (spring means 34; Fig 1) arranged at an interface between a nozzle ring (20) and a shroud (24),
the at least one bias device configured to exert an axial force on the nozzle ring to maintain contact between vane tips (Annotated Fig 1a) of the nozzle ring and a volute wall (Annotated Fig 1a) (e.g. described in abstract).
LaRue may not explicitly disclose: The shroud is a turbine shroud (LaRue’s shroud is a compressor shroud).
However, Wengert, in the same field of endeavor, turbochargers, teaches:
Analogous variable turbine geometry (abstract) including a nozzle ring (11 combined with 17; Fig 1) with vanes (9), springs (18, 19) pressing on the ring from a turbine shroud (3) toward a volute wall (5).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify LaRue to include Wengert’s teachings as described above, having LaRue’s structure housed within the turbine side of the turbocharger as taught by Wengert rather than housed within the compressor side of the turbocharger, in order to have the benefits of LaRue’s structure incorporated into a turbocharger turbine instead of a turbocharger compressor. It is noted that it is known in the art to have designs of vaned rings incorporated within both/either a turbocharger compressor and/or a turbocharger turbine, as even stated in Applicant’s own paragraph 0004.
PNG
media_image1.png
673
662
media_image1.png
Greyscale
Annotated Fig 1a
Regarding claim 3, LaRue, as modified above, discloses:
the at least one bias device is arranged at one or more of circumferentially around an anti-rotation structure (pin 40) partially embedded in the turbine shroud (Fig 1 shows this), within a recess of the nozzle ring or the turbine shroud (Fig 1 shows this), and around a central axis of rotation of the turbine (Fig 1 shows this),
and wherein when the at least one bias device is arranged around the central axis of rotation of the turbine, the at least one bias device has a diameter similar to a diameter of the nozzle ring (Fig 1 shows this).
Regarding claim 4, LaRue, as modified above, discloses all claim limitations (see above) except may not explicitly disclose:
the at least one bias device has a spring force that is double that of a compressive force exerted on the at least one bias device by axial expansion of the nozzle ring.
However, LaRue’s spring inherently has some kind of spring force relative to the compressive force exerted on it by the nozzle ring, and courts have established that a change in size/proportion will not sustain a patent and is not inventive, rather is a practice requiring only ordinary skill and hence is considered a routine expedient and obvious to a person having ordinary skill in the art. In this case, any difference between the prior art’s inherent spring size/force relative to the compressive force exerted on it and Applicant’s spring force size/force relative to the compressive force exerted on it is held to be obvious. See MPEP 2144.04(IV). Also, it is a typical engineering approach to select a spring having a certain spring force relative to the compressive force acting on it in order to obtain a desired/required factor of safety (see for example https://en.wikipedia.org/wiki/Factor_of_safety).
Regarding claim 5, LaRue, as modified above, discloses:
axial movement of the nozzle ring is enabled by the at least one bias device (Fig 1 shows this; e.g. col 2 lines 43-53).
Regarding claim 6: the recitation “a pressure exerted on the volute wall by the vane tips is maintained uniform during operation of the turbine” is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patent-ability of a product does not depend on its method of production or use. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable. Please see MPEP 2113(I).
In this case, pressure exerted on the volute wall by the vane tips of the prior art is capable of being maintained uniform during operation of the turbine, thus the product in Applicant’s claim is the same or obvious from a product of the prior art.
Regarding claim 8, LaRue, as modified above, discloses:
the turbine is implemented in a radial turbocharger (Fig 1 shows this).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the prior art reference(s) as applied to claim 1 above, and as evidenced by US 20160076439 A1 (hereinafter Martens).
Regarding claim 2, LaRue, as modified above, discloses:
the at least one bias device is a spring (e.g. col 3 lines 41-48) arranged co-planar with the volute wall and configured to deform elastically along an axial direction (Fig 1 shows this).
LaRue may not explicitly disclose: The spring is a disc spring.
However, LaRue does disclose the spring is a wave spring (e.g. col 3 lines 41-48). Since the applicant has not disclosed that a disc spring serves any particular advantage or particular purpose, or that it solves a stated problem, and it appears that a wave spring identified by LaRue would perform equally well with a disc spring as specified by the applicant, as both springs exert axial force in a confined axial space, it would have been an obvious matter of design choice for a person having ordinary skill in the art to choose either a disc spring or a wave spring.
Furthermore, Martens, in the same field of endeavor of turbocharges, provides evidence that choosing between a coil spring, a spiral spring, a wave spring, or a disc spring, is just a mere design choice which constitutes choosing a suitably designed spring for exerting axial force (para 0016, 0035).
The basis for the design choice rejection above without the use of a secondary reference originates from case law: Ex parte Clapp, 227 USPQ 972, 973 (Bd.Pat.App. & Int. 1985). Whereby, to support a conclusion that a claim is directed to obvious subject matter, the prior art references must suggest expressly or impliedly the claimed invention or an Examiner must present a "convincing line of reasoning" as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. In doing so, the Examiner may rely on “logic or scientific principle.” In re Soli, 137 USPQ 797, 801 (CCPA 1963). See also MPEP 2144.02. When determining whether or not a rejection based on design choice is appropriate, the Examiner must review the specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned "convincing line of reasoning." Clapp, 227 USPQ at 973.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over the prior art reference(s) as applied to claim 1 above, and as evidenced by non-patent literature “3 ways to stack compression spring” (hereinafter Tevema).
Regarding claim 7, LaRue, as modified above, discloses all claim limitations (see above) except may not explicitly disclose:
the turbine includes a plurality of the at least one bias device distributed evenly around a circumference of the nozzle ring.
However, Wengert, in the same field of endeavor, turbochargers, teaches:
a plurality of springs (18; Fig 1; col 3 line 65 – col 4 line 2) distributed evenly around a circumference of the nozzle ring with the advantage being that having a plurality of springs require only a little accommodation space and can therefore be easily arranged around other structure (column 4 lines 3-6).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify LaRue to include Wengert’s teachings as described above, utilizing Wengert’s plurality of springs (wherein each of Wengert’s springs is accommodated within its own accommodation space), in order to design a spring force system using a plurality of springs wherein the springs require only a little accommodation space and can therefore be easily arranged around other structure (column 4 lines 3-6).
Furthermore, Tevema, in the same field of endeavor of springs, provides evidence that choosing between a single compression spring or a plurality of compression springs in various circuits, e.g. in parallel, is an obvious design consideration: Page 1, for example, identifies that “In many applications it's impossible to provide the correct forces with just one compression spring. Several compression springs of the same or different dimensions are often used for this to create the right forces.” and “In parallel circuits, two or more compression springs are placed under the same pressure plate. This spreads the pressure over the two compression springs. The force of the total spring system is always greater than the spring constant than that of one spring.”
Conclusion
The following prior art, made of record and not relied upon, is considered pertinent to applicant's disclosure:
US 20110038742 A1 - cited for teaching in Fig 17 a spring biasing a nozzle into a volute wall.
US 20080193288 A1- cited for teaching an elastic member O-ring biasing a nozzle towards a volute wall.
US 4659295 A - cited for teaching in Fig 4 a variable nozzle vane with a spring biasing the vane towards a volute.
US 9163557 B2 - cited for teaching a turbo’s turbine with a variable nozzle ring biased by a spring.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Art Golik whose telephone number is (571)272-6211. The examiner can normally be reached Mon-Fri 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathaniel Wiehe can be reached at 571-272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Art Golik/Examiner, Art Unit 3745
/NATHANIEL E WIEHE/Supervisory Patent Examiner, Art Unit 3745